- Pieces of rice cake which are made by cutting a large sheet of rice cake into rectangular forms and then individually wrapping them are popular as they are easily preserved and ready to be baked to be able to eat them at the desired time. Sato-shokuhin Co., Ltd. (referred to as "Sato" hereinafter) and Echigo-seika Co., Ltd. (referred to as "Echigo" herein after) are the two largest manufacturers of such pieces of rice cake in Japan.
- On September, 7, 2011, the IP High Court issued an interlocutory decision that the acts of manufacturing and selling pieces of rice cake by Sato infringe the patent right owned by Echigo, thus overturning the decision of the district court which denied such infringement.
- As you may know, since a wrapped piece of rice cake is hard to eat, it is baked so as to be softened to be able to eat it. While it is being baked, there is a problem that the interior portion of the piece suddenly inflates to flow out to the exterior so that it sticks to a hot plate or grill. In order to solve this problem, a piece of rice cake defined by Echigo's patented claim includes a slit line on a side peripheral surface thereof which is formed by side surfaces perpendicular to the top surface and which is neither the top nor bottom surface (Fig. 1). The IP High Court found that the effects of the slit line are that (i) sudden inflation and flowing out of the interior of the piece of rice cake can be restricted; (ii) a bad appearance due to the slit line after the piece of rice cake is baked can be prevented (the aesthetic appearance thereof can be maintained); and so on (Fig. 2).
Fig.1 Fig.2 (Figs. 1 and 2 are cited from the website of the courts of Japan;
"http://www.courts.go.jp/hanrei/pdf/20110908113622.pdf") - Pieces of rice cake manufactured by Sato have slit lines not only on their side surfaces but also on their top (or bottom) surface (Fig. 3).
Fig.3
(Fig. 3 is cited from the website of the courts of Japan;
"http://www.courts.go.jp/hanrei/pdf/20110908113622.pdf") - Echigo asserted that Sato's pieces of rice cake fell within the technical scope of the invention defined by Echigo's patented claim. Sato argued against Echigo that Sato's pieces of rice cake did not fall within said technical scope for the reason that they do not provide the above-stated aesthetic appearance effect (ii).
- The district court had accepted Sato's argument. However, the IP High Court found that a piece of rice cake having slit lines not only on its side surface but also on its top surface fell within the technical scope of the invention defined by Echigo's patented claim for the reason that there is no description in the specification of Echigo's patent that the above-mentioned effects (i) and (ii) are not produced in the case where slit lines are provided on both the top and side surfaces of a piece of rice cake. The IP High Court additionally stated that even if the good appearance of the piece of rice cake is damaged due to the slit line on the top surface, a piece of rice cake having slit lines on its side and top surfaces would not be necessarily excluded from said technical scope.
- During the examination procedure for the patent application, Echigo amended the claims once so as to exclude a piece of rice cake having a slit line on its top or bottom surface. However, since the Examiner pointed out that the amendment had introduced new matter, Echigo withdrew it. In this regard, Sato argued that since Echigo had once excluded a piece of rice cake having a slit line on its top surface, Sato's pieces of rice cake having slit lines on its top surface did not fall within the technical scope of the invention defined by Echigo's patented claim based on the prosecution history estoppel. However, the IP High Court did not accept Sato's argument for the reason that Echigo should not be bound by their argument about the withdrawn amendment, and that Echigo had consistently argued that a piece of rice cake having slit lines on its side and top surfaces fell within the technical scope of the invention defined by Echigo's patented claim through the examination procedure except in the argument regarding the withdrawn amendment.
- This IP High Court's interlocutory decision is very pro-patent because the decision of the district court has been overturned to protect the pieces of rice cake of the patentee (Echigo). It is expected that the pro-patent orientation of the IP High Court will be maintained at least in the near future. Regarding the present case, the IP High Court is now considering what the proper amount of damages should be. Echigo is claiming very high amount, that is, 1,485,000,000 Yen (about 19,300,000 US$). Thus, many people will continue to pay attention to this case.
Decision of IP High Court in Case of "Piece of Rice Cake"
(Echigo-seika v. Sato-shokuhin)
November 4, 2011
